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PATENTSTRIPS AND PAKISTAN

LEGISLATION

BY

NAZIR A. SALEEMInazir45pk@hotmail.com

Mobil: 0300 5320517

mailto:nazir45pk@hotmail.commailto:nazir45pk@hotmail.com

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Background History

Fairly old history in ancient England. Elizabethan Monopoly Grants. Statute of Monopolies in England 1624.

Continental Europe: Inventors Statues of Venice, 1474. Patent for Galileo innovative machine meant for Irrigation

purposes, 1594. Similar Patent provision in Germany, France and

Netherlands.

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Background History USA

The US Legislative system also draws from: Provision in US Constitution. Patent Laws 1790 1870.

US Supreme Court decisions an guideline. Patent Laws 1952 1995.

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Patent Legislation of Pakistan

Prior to TRIPS Agreement, Pakistan followed Patent andDesign Act 1911 that fell short of current economicenvironment in terms of coverage and efficacy.

TRIPs became effective w.e.f. 1.1.1995 under the WTOframework of Single Understanding.

Pakistan as such obliged to upgrade its legislation tomeet TRIPS provisions.

Transition period of 5 years was allowed to developingcountries.

Pakistan drew its Patents Ordinance in year 2000 thatrepaeled the Act of 1911.

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TRIPS - Pakistan VS USA As required under TRIPS provisions Member countries

were obliged to set up MAILBOX system duringtransitional period to receive patent applications in thearea of pharmaceutical and Agro-chemicals to beopened on 1 st January 2005 (Article 64.5).

Pakistan non-compliance for MAILBOX was challengedby USA in April 1996.

EU subsequently joined USA in May 1996. A compromise was reached as Pakistan assured to set

up the MAILBOX. MAILBOX set-up under Ordinance XXVI of 1997.

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Patent Ordinance of Pakistan

Patent and Design Act 1911 was split and two separateTRIPS compliant Ordinances viz. the Patent Ordinanceand Design Ordinance, 2000.

Relevant ministries were asked to draw draft legislationsthat were discussed in inter-ministerial committeemeetings involving major stake-holders including PIPRA.

Major thrust/input was by Ministry of Commerce incollaboration with the Ministry of Law.

The draft Patent legislation, inter alia, was got vetted

from WIPO. Patent Ordinance was issued in year 2000 and notifiedto WTO.

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Patent Ordinance of Pakistan

Pakistan legislation was reviewed by WTO TRIPSCommittee in the end 2000. Some 246 questions were raised by different members

on Pakistan IPR legislations. For many questions the practicing IPR lawyers were

consulted and responses were submitted to TRIPScommittee.

Rules were drawn to implement Patent Ordinance Certain issues were felt by stake-holders to be reviewed

that was undertaken in consultation with the stake-holders in 2002.

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Salient Features of PatentOrdinance of Pakistan

Short Title: The Patents Ordinance 2000.

Section 1(2): It extends to the whole of Pakistan.

Section 1(3): It shall come into force at once except for the provisions relating examination, sealing, grant andpost-grant matters of patents relating to the chemicalsproducts intended for use in agriculture and medicines,but excluding the grant of exclusive marketing rightstherefore and mailbox filing that shall come into force onand from the first day of 2005.

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What is Invention?

Section 2(1): invention means any new and usefulproduct or process, in any field of technology andincludes any new and useful improvement of either of them; (existing).

any new and useful product, including chemicalproducts, art, process, method or manner of manufacture, machine, apparatus, or other article;substance or article or product produced by

manufacturer and includes any new and usefulimprovement of any of them and an alleged invention(prior art)

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Process Patent Section 2(s): process means any art, process or

method or manner of new manufacture of a new product;(existing)

any art, process or method of manufacture of a product

and includes a new use of a known process or aproduct. (old)

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Product Patent

Section 2(t): product means any substance, article,apparatus, or machine; (existing)

any substance, article, apparatus, machine or achemical product (old)

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Patentable Inventions

Section 7(1): Any invention is patentable, if its is new,involves an inventive step and is capable of industrialapplication.

Following shall not be regarded as invention:*a discovery, scientific theory or mathematicalmethod;

*a literary, dramatic, musical or artistic work or anyother creation of purely aesthetic character whatsoever;

* a scheme, rule or method for performing a mental act,

playing a game or doing business;* the presentation of information; and substances that exist in nature or if isolated therefrom.

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A Patent shall not be granted Section 7(4): necessary to protect the ordre public or

public morality, including human, animal or plant life or health or to avoid serious prejudice to environment; Plants and animals other than micro-organisms,

essentially biological processes for the production of plantsor animals other than non- biological and micro-biological

processes; Diagnostic, therapeutic and surgical methods for thetreatment of humans or animals;

For a new or subsequent use of a known product or process;

A mere change in physical appearance of a chemicalproduct where chemical formula or process of mfg.remains same . This shall not apply to an invention fulfillingthe criteria of patentability.

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Industrial Application

A product can be patented if it involves: An innovative step; It is non-obvious;

An invention shall be considered capable of patenting if itis capable commercial exploitation or otherwise industrialuse.

Usefulness approach

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Contents of Specification

For a chemical product intended for use in medicine or agriculture, the specification shall be specific to onechemical product only describing physical,pharmacological and pharmaceutical properties, or asthe case may be, the properties related to its use inagriculture and its impact on environment.

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Contents of Specification

Section 15(3) every complete specification shalla. Describe the invention and the method by which itis to be performed;b. Disclose invention which is known to applicant for which he is entitled to claim protection; andc. End with a claim or claims defining the scope of theinvention for which protection is claimed.

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Rights Conferred by Patent (Section 30)

Exploitation of patent invention by a person other thanowner is subject to owners agreement.

Exploitation of a patented invention it relates to productmeans (Sec 30.2.a):i) making, importing, offering for sale, selling or using; or ii) Stocking for purpose of offering for sale, selling or using

Exploitation of a patented invention it relates to processmeans:i) using the process; or ii) doing any of the acts under section 30.2.a for a product directlyobtained by means of patented process.

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Rights Conferred by Patent (Section 30.5)

Right under the patent shall not extend to:(a) Acts in r/o articles put on the market anywhere in the worldby owner of patent or with his consent; or by anauthorized person or in any other legitimate manner such ascompulsory license;

(b) the use of articles on an aircraft, land vehicles, or vessels of other countries which temporarily or accidentallyenter Pakistan;(c) acts done only for experimental purposes relating to apatented invention; or (d) Acts performed by any person in good faith e.g. for education and research purposes.

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Exploitation by a Government Agency or Third Person: (Section 58.1-3)

Fed. Govt. may, w/o prior consent of the owner of patentdecide where:

i) Public interest, national security, nutrition, health or development of other sectors of economy so requires;ii) Fed. Government determines that manner of exploitationby owner or his licensee is anti-competitive; and theGovt. intends to remedy such practices.

Prior to Fed. Govt. decision the patent owner or anyinterested person shall be provided an opportunity to be

heard; Exploitation to be limited for specific objective only;Patent owner to be compensated adequately.

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Exploitation by a Government Agency or Third Person (Section 58.4)

When the patent owner refuses to grant license to athird person on reasonable commercial terms andconditions and within a reasonable time. This shallnot, however, apply in case of:-

(i) National emergency or other urgency where owner of

patent shall be informed of Fed. Govt. decision as soonas possible;(ii) Public non-commercial use; and(iii) Anti-competitive practices as determined by judicial or administrative body (Section 58.1.ii).

For semi-conductor technology authorization onlyfor non-commercial public use or where judicial or administrative body so decides to curb anti-competitive behavior.

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Infringement of Patents (Section 59)

Suit for infringement of a patent to be lodged with District Court bypatentee; In case counter-claim for revocation of patent is made by defendant,

the suit along with counter claim shall be transferred to High Courtfor decision;

Relief for infringement includes : Court to order to desistfrom infringement; infringer to compensate the patent owner; hisattorneys fee; prevent the infringed goods to enter channels of commerce; confiscate goods and material/machinery used inmanufacture of infringed goods.

Infringer to face fine and/or imprisonment or both to serve as adeterrence from future activity of infringement.

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THANK YOU VERY MUCH